Wednesday, March 11, 2015

WYHA? TTAB Affirms Mere Descriptiveness Refusal of PHOTOGREFER for Online Photography Referrals

The Board agreed with Examining Attorney Brittney L. Cogan that the mark PHOTOGREFER is merely descriptive of "online referrals in the field of photography," under Section 2(e)(1). Applicant agreed that its usage of the mark indicates that the two words are intended to be understood independently: as "Photog" and "Refer." Would you have appealed? In re Inc., Serial No. 85838184 (March 9, 2015) [not precedential].

The Board noted that, although applicant seeks registration for PHOTOGREFER in standard character form, it could (and does) depict the mark as two words. PhotoGrefer refer is merely descriptive of applicant's online referral services. Even if applicant were the only use of the term, the mark would still be merely descriptive.

Finally, applicant made the strange argument that "the term 'PHOTOGREFER' in relation to services like those of the Applicant has consistently been treated as suggestive of the respective services." However, none of the registrations referred to by Applicant were for the mark PHOTOGREFER.

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2015.


At 1:44 PM, Blogger Malachi 3:16 said...

Well, it was a least a unique way to express what her business purpose was.

Maybe better if she would have proposed to Examiner as alternative in OA response "Amend to Supp" (if the choice would have been available).

At 3:17 PM, Blogger RT said...

You know, I think I MHA. With SUGAR & SPICE for bakery items approved because of the double entendre, and N2WINES for wine likewise, why not this one? I think it's a pretty cute pun.

At 7:45 PM, Anonymous Anonymous said...

I must be blind, cuz I don't see it (no pun intended). It's a coined term without any prior usage or definition. A registration removes nothing from normal usage, and nobody would use it in any type of descriptive way. I could see an argument about "photo" or "photog", but the suffix is "refer", not "referral", and I would argue against "refer" being descriptive as used in the mark. The opinion identified "referral" as descriptive but never said anything about "refer". Evidence of Applicant's usage was all "photographer", and it seemed the phonetic similarity between "photographer" and "photogrefer" swayed the panel, but this is not a phonetic mark, so to speak, but visual. No claim is made to "photographer". The panel parsed the mark and got lost in a fog - reefer madness (pun intended). What am I missing here?

At 12:01 PM, Blogger Chris McElwain said...

Agreed. This one surprised me a little bit. I definitely would have considered appeal.

I don't see how you can look at PHOTOGREFER and not think it creates a commercial impression more than the sum of its parts. Scope of protection might be narrow (I don't think it's confusable with BRAND X PHOTO REFER for example) but merely descriptive?


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